Affliction, Inc. v. Chinasupply c/o Tan Longli
Claim Number: FA0809001223521
Complainant is Affliction, Inc. (“Complainant”), represented by Ed
Jaffe, of Jaffe, Ross & Light
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <afflictionshirt.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2008.
On September 8, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <afflictionshirt.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <afflictionshirt.com> domain name is confusingly similar to Complainant’s AFFLICTION mark.
2. Respondent does not have any rights or legitimate interests in the <afflictionshirt.com> domain name.
3. Respondent registered and used the <afflictionshirt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells apparel and accessories under the AFFLICTION mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 24, 2008 (Reg. No. 3,109,069, issued June 27, 2006). Complainant has used the AFFLICTION mark to market and sell its products continuously in commerce since at least as early as 2005. Complainant is internationally known for its products and has also licensed its AFFLICTION mark for use in mixed martial arts fight promotions, which has introduced Complainant’s mark to a much wider audience.
Respondent registered the <afflictionshirt.com> domain name on May 27, 2008. The disputed domain name resolves to a website that sells clothing containing Complainant’s AFFLICTION mark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established sufficient rights in the AFFLICTION mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <afflictionshirt.com> domain name is confusingly similar to its AFFLICTION mark. The <afflictionshirt.com> domain name differs from Complainant’s mark in two ways: (1) the descriptive term “shirt” has been added to the end of the mark; and (2) the generic top-level domain (gTLD) “.com” has been added. Neither the addition of a descriptive term nor the addition of the gTLD “.com” sufficiently distinguishes a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”). The Panel finds that because these changes do not minimize or eliminate the resulting likelihood of confusion, Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <afflictionshirt.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known by the <afflictionshirt.com> domain name nor has it ever been the owner or licensee of the AFFLICTION mark. The WHOIS listing for the disputed domain name lists Respondent as “Chinasupply c/o Tan Longli.” Respondent also has failed to present any evidence that is contrary to Complainant’s contentions. The Panel therefore finds that Respondent is not commonly known by the <afflictionshirt.com> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is selling
clothing that contains Complainant’s AFFLICTION mark at the website that
resolves from the <afflictionshirt.com> domain name. Complainant contends that Respondent does not
have a license or any other right to sell this clothing, and that in fact the
clothing is counterfeit. The Panel finds
that Respondent’s sale of clothing bearing Complainant’s mark without the
consent of Complainant is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use of the <afflictionshirt.com>
domain name under Policy
¶ 4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, through the confusion caused by the similarity between the AFFLICTION mark and the <afflictionshirt.com> domain name. Complainant also contends that Respondent intended to disrupt Complainant’s business by diverting confused customers to Respondent’s website, where they would mistakenly think they were buying Complainant’s products. Respondent’s disruption of Complainant’s business by selling counterfeit versions of Complainant’s products compels the Panel to find that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant also contends that Respondent is gaining commercially from the sales of counterfeit clothing being made on the website that resolves from the <afflictionshirt.com> domain name. Because Respondent has no license or any other right to sell clothing bearing the AFFLICTION mark, the Panel finds that Respondent’s commercial gain from the sale of that clothing is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <afflictionshirt.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 23, 2008
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